The Complainant is Dubai Properties Group LLC of Dubai, United Arab Emirates, represented by Melbourne IT Digital Brand Services, France.
The Respondents are Domain Admin, Protected Whois of Golden, Colorado, United States of America and Mohammed Shan of Dubai, United Arab Emirates, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Domain Monkeys, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2012. On April 5, 2012, the Center transmitted by email to Domain Monkeys, LLC. a request for registrar verification in connection with the disputed domain name. On April 6, 2012, Domain Monkeys, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 16, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. Informal responses were filed with the Center on April 30, 2012 and May 6, 2012.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 7, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a company located in Dubai, which develops and manages properties, communities and destinations in Dubai and offers end to end property related services through its subsidiaries. The Complainant was founded in 2004, and diversified in 2008 to include real estate development, comprehensive property services and engineering under the trade name “Dubai Properties Group”.
At the time the Complaint was filed, the Complainant was one of the largest fully integrated real estate and community development businesses in Dubai and has received several awards in recognition of these achievements.
The Complainant operates its business under the trade name “Dubai Properties Group”, building and selling over 22,000 units, involving 13 different development projects, and manages properties in Dubai which house over 55,000 people. The Complainant also manages millions of square feet of commercial space and retail space under the Dubai Properties Group trade name.
The Complainant employs over 2,000 people across its subsidiaries and corporate units.
The Complainant’s business name is a registered trade name under commercial license number 619645, and the Complainant owns several domain names including: ; ; and .
The Complainant has extensively advertised its business through a variety of media and press releases and articles. The Complainant under its trade name has also supported and played sponsorship roles in a variety of community outreach programs, annual regional and overseas exhibitions. The Complainant’s advertising expenditures in 2011 totaled USD 3,729,455.
The domain name had been previously registered and expired on July 24, 2011. After the expiry of the registration, and the redemption period the disputed domain name was listed for auction and/or back order.
In the past, the Complainant has worked with a creative agency called “theAdKitchen”.
On October 15, 2011 at 11:10 AM, Fady Karim of “theAdK” contacted the Complainant by e-mail advising the Complainant of an auction for the domain name and seeking their instructions to bid on the domain name on their behalf. The e-mail of October 15, 2011 advised that the “bidding price start’s at $5500/-“.
In an e-mail dated October 17, 2011 from Jacques Blanc, South EMEA Territory Manager, Melbourne IT Digital Brand Services, Mr. Blanc advised the Complainant that the registrant of the disputed domain name was the Respondent Mr. Shan and that he had been the registrant since October 10, 2011.
The Respondent Mr. Shan had a contractual relationship with the Complainant’s former creative agency, “theAdKitchen”.
The publicly available WhoIs record shows that the disputed domain name was registered on October 10, 2011 and is owned by the Respondent Mr. Shan. The Respondent Mr. Shan filed a response. 5. Parties’ Contentions A. Complainant Confusingly Similar
The Complainant submits that although it does not have a registered trademark for DUBAI PROPERTIES GROUP, it has developed common law rights in the mark. The Complainant contends that through extensive use and advertising since 2004, the trade name and common law mark DUBAI PROPERTIES GROUP has developed a significant reputation and recognition in the United Arab Emirates. Accordingly, the Complainant submits that the trade name and common law mark DUBAI PROPERTIES GROUP has become distinctive of the Complainant and its services.
The Complainant further contends that the disputed domain name is identical to the Complainant’s common law trademark except for the addition of the “.com” designation. The Complainant submits that the addition of the “.com” designation does not serve to distinguish the domain name from the Complainant’s common law trademark. Rights and Legitimate interests
The Complainant submits that the Respondents do not have any legitimate rights or interests in the disputed domain name. The Respondent is not commonly known by the name “Dubai Properties Group”, and have never been authorized or licensed by the Complainant. The Complainant further contends that the Respondents have not used the disputed domain name in a bona fide offering of goods and services. The disputed domain name currently reverts to a blank page, and the Respondents tried to sell the disputed domain name to the Complainant for an amount exceeding the Respondents’ out-of-pocket expenses, pretending there was an ongoing auction. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent Mr. Shan is a contractor for the advertising agency used by the Complainant, and as such he was aware of the Complainant’s trade name and common law trademark DUBAI PROPERTIES GROUP. The Respondent Mr. Shan knowingly registered a domain name that was confusing similar to the Complainant’s common law trademark. The Complainant further submits that the Respondent Mr. Shan failed to respond to cease and desist letters, and then hid his identity through a privacy service. The Complainant also submits that the Respondent Mr. Shan outright denied being the owner of the disputed domain name and when presented with irrefutable evidence of his ownership, he responded with vague and false explanations. B. Respondent
The Respondent Mr. Shan submits that he instituted the privacy service because he was under a lot of pressure to transfer the disputed domain name to the Complainant.
The Respondent Mr. Shan denies trying to sell the disputed domain name to the Complainant. He claims to have engaged in a “casual mail chat” with the Complainant to assist the Complainant in obtaining the disputed domain name.
The Respondent Mr. Shan further claims that the Complainant had every opportunity to back order the disputed domain name or otherwise purchase the disputed domain name themselves. He claims that he purchased the disputed domain name through a legitimate auction process, having won the disputed domain name fairly against several other bidders.
The Respondent claims that he is in the business of purchasing domain names, through auctions, and he provides the services of website development and application development. The purchase of the disputed domain name was part of his legitimate business operations. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have common law trademark rights in the mark DUBAI PROPERTIES GROUP in the United Arab Emirates by virtue of its extensive use and advertising. The Complainant has filed extensive evidence of the use of the trade name and common law mark DUBAI PROPERTIES GROUP in association with the management of real estate properties and units for both personal and commercial purposes. The Respondent Mr. Shan in his informal responses did not refute these claims, and accordingly the Panel is prepared to conclude that the Complainant has developed a significant reputation in the DUBAI PROPERTIES GROUP common law trademark in that jurisdiction.
The Panel further finds that the disputed domain name is identical to the Complainant’s common law trademark DUBAI PROPERTIES GROUP, except for the addition of the addition of the “.com” designation. The Panel finds that the addition of a “.com” designation does not serve to distinguish the disputed domain name from the Complainant’s common law trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Respondent does not have any rights or legitimate interest in the disputed domain name . The Respondent is not commonly known by the name “Dubai Properties Group”, and was clearly never authorized or licensed by the Complainant to use the common law trademark DUBAI PROPERTIES GROUP.
The Panel accepts the Respondent Mr. Shan’s contention that he is in the business of purchasing domain names for website development and application development. However, in this case, it is clear that the Respondent Mr. Shan was aware of the Complainant’s rights in the trade name and common law trademark because he was a contractor for the advertising agency employed by the Complainant. The Respondent Mr. Shan did not in his response deny the Complainant’s contention that he was aware of their trademark rights. Accordingly, the Panel concludes that the Respondent was aware of the Complainant’s trademark rights, when he registered a domain name that was confusingly similar.
The publicly available WhoIs record reveals that the disputed domain name was created on October 10, 2011 by the Respondent. The evidence filed in the Complaint, shows an e-mail dated October 15, 2011 from the Complainant’s former advertising agency to the Complainant, seeking instructions to bid on the auction for the disputed domain name. The e-mail of October 15, 2011 advises the Complainant that there is an ongoing auction for the disputed domain name and that the bidding price begins at USD 5,500. The Panel concludes on the evidence filed in the Complaint, which the Respondent did not refute, that the disputed domain name was already owned by the Respondent Mr. Shan by the time the e-mail of October 15, 2011 was sent. It is unclear whether there actually was an ongoing auction, but it does appear that there was an attempt to sell the disputed domain name to the Complainant for an amount exceeding Respondent’s out of pocket expenses. The Respondent’s conduct does not support a finding of any legitimate right or interest on his behalf.
Accordingly, the Panel finds that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent was aware of the Complainant’s trademark rights in the mark DUBAI PROPERTIES GROUP when he registered the disputed domain name on October 10, 2011. The Panel further concludes that the Respondent was involved in a scheme to sell the disputed domain name to the Complainant for an amount exceeding the Respondent’s out-of-pocket expenses under the pretext that there was an ongoing auction. The Panel refers to the reasoning set out in paragraph 6.B. of this Decision.
The Panel finds that the conduct of registering a confusingly similar domain name to the Complainant’s trademark and then targeting the Complainant with an offer to sell the name under these circumstances, for an amount higher than the Respondent’s out-of-pocket expenses, to be evidence of bad faith under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: June 12, 2012
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